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Introduction on the Administrative Regulations of Prioritized Patent Examination

Aug 15, 2017 By Qi LIU

In order to enrich and develop the situations for using the prioritized patent examination system, further shorten the examination cycle, improve the efficiency, as well as boost up Chinese economy, the Chinese Patent Office newly released the “Administrative Regulations of Prioritized Patent Examination” (hereafter referred to as “New Regulations”), which took effect as of Aug.1st , 2017. The old Regulations, in effective since Aug.1st , 2012, have been annulled at the same time.

The Release of the New Regulations will definitely be good news to all the patent applicants. What kinds of cases can apply the New Regulations, what kinds of documents need to be submitted, and how is the examination conducted? With all the questions, Let’s probe into this New Regulations:

1. What kinds of Chinese patent applications/patents can apply the prioritized examination (Rules 2, 3, 4 and 7 ):

    A. The scope of the applicable Chinese patent applications:

The New Regulations have expanded the scope of the applicable Chinese patent applications and regulate four kinds as below, for which the prioritized patent examination can be applied:

  • Chinese patent application for invention during the substantial examination procedures (the only situation in the Old Regulations);

  • Chinese patent applications for utility model and design;

  • Chinese patent applications for invention, utility model and design during the Re-examination procedures;

  • Chinese patents for invention, utility model and design during the Invalidation procedures;

    B. The scope of the applicable situations (Rule 3 and 4):

The New Regulations have broadened the applicable conditions and regulate that, if a Chinese patent application or a Chinese patent application in re-examination procedures measures up one of the six situations as below, it would be qualified to request the prioritized examination:

  • It involves the national key development industries, including but not limited to energy conservation and environment protection, new generation of information technology, biotech, High-end Equipment Manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing;

  • It involves the key development industries of which is encouraged by the provincial governments and prefecture-level city government;

  • It involves the fields of technologies relating to internet, big data, cloud computing and that technologies or products evolve rapidly;

  • The patent applicant or the applicant requesting re-examination gets everything ready to implement or has already started to implement, or has shown that a third party is implementing its invention-creation;

  • It should be the first filing in China and be claimed as the priority for the filing a patent application in another country or region on the same subject matter;

  • For a invalidation case which also involves a patent infringement case, the parties in action have already requested the local patent department to settle, or submit the case to the court, or request the Arbitration mediation organization for arbitration and mediation;

  • Other situations that has significant interests for China and the public, and therefore need to be examined as a priority;

    C. The filing methods of the applicable Chinese patent applications:

  • The Chinese patent application or the patent application in re-examination should be a E-filing case;
  • The Chinese patent in invalidation procedures can be either an E-filing case or a paper filing case, but E-filing is suggested.

 From the above rules , it is clear that the scope of the applicable applications/patents has extended to all kinds of patent applications/patents and almost covers the substantial procedures for a Chinese patent application in its whole lifespan. In comparison, the required documents in the New Regulations are much more simplified and feasible for preparation.

2. What documents need to be submitted for the prioritized examination? (Rules 5 and 8)

    A. The Requesting form:

  • The requesting form for a Chinese patent application in substantial examination is different from the one for a Chinese patent application in re-examination and invalidation procedures;

  • For two Chinese patent applications filed on the same day for the same subject matter (in accordance to Article 9, Chinese Patent Law), if the patent application for invention requests the prioritized examination, the Chinese application number for the same-day-filing application for utility model is necessary to be filled in the Requesting form.

    B. Prior art and prior design:

  • It is the only necessary document for a Chinese patent application in substantial examination to request prioritized examination;

  • Prior art refers to the definition in Article 22, para 5 of the Chinese Patent Law, i.e. any technology known to the public before the date of filing in China or abroad;

  • Prior design refers to the definition in Article 23, para 4 of the Chinese Patent Law, i.e. any design known to the public before the date of filing in China or abroad;

  • The applicant should focus on the prior arts or prior designs that are mostly relevant to the Chinese patent application, and with the ideas that the documents are to facilitate the examiner to accelerate the examination;

  • Patent documentation with only the documentation serial numbers and published date, indicating the relevant paragraph or picture numbers are sufficient;

  • As for the non-patent documentation, such as magazines or books, it is suggested providing the full pages or the relevant pages.

    C. Other relevant supporting documents, which refers to the documents that would prove that the case falls into one of the situations described in rule 3 or 4 in the New Regulations:

  • An introduction made by the applicant, explaining that the technologies in the Chinese patent applications belongs to the key industries, the technologies or the products regulated in Rule 3;

  • The copy of Certificate that could attest the technologies in the Chinese patent applications belongs to the key development industries of which is encouraged by the provincial governments and prefecture-level city government;

  • The product photos, the product catalog, the product manual etc. that would prove the applicant has already prepared to implement the Chinese patent case;

  • The sale contract, the supply agreement, the purchase invoices and other documents that would prove the trade and sale of the products, in order to prove that the applicant has already started to implement the Chinese patent case or there would be potential infringement upon the Chinese patent case;

  • The Official Filing Receipts of other national or regional filings, that would prove the first-filing Chinese patent case is claimed as the priority for other national or regional filings. In case that the first-filing Chinese patent applications is claimed as the priority for the PCT application, the PCT application number in the Requesting forms is sufficient.

    D. Recommendations

  • The requesting forms should be also executed by the local Patent Office or the related State Departments for recommendation;

  • The related State Departments refer to the state departments in charge of technology, economy and industry, as well as the member of the state intellectual property strategy mediation associates (established in 2016, with 28 government departments, and based in Chinese Patent Office;

  • Three exceptional situation: the first-filing Chinese patent application, the patent application in re-examination which the request for prioritized examination has been once made during the substantial examination procedures; the prioritized examination is requested by the local Chinese Patent Office, the courts or the Arbitration mediation organization.

     E. In case of the joint applicants, the request for the prioritized examination should be consented by all the co-applicants:

  • For the Chinese joint applicants, the signatures on the Requesting forms are sufficient;

  • In case that one of the co-applicants, or all the co-applicants are foreign applicants, the Consent Declaration signed thereby is necessary.

Having had the applicable applications/patents and the supporting documents, the procedures to initiate the request for prioritized examination are as follows:

3. Procedures (Rule 2, 9,10, 11)

     A. Timing:

  • For a Chinese application for invention: after entry into the substantial examination procedures;

  • For a patent application for utility model or design: after filing the new application and the full payment of the filing fees;

  • For a Chinese patent application/patent in re-examination procedures or invalidation procedures: after the request for re-examination or invalidation and the full payment of the requesting fees, and before a decision is made.

     B. Acceptance by the Chinese Patent Office:

  • For Chinese patent applications: after receiving the Request for prioritized examination as well as the documents in support, it will take about 3 – 5 working days for the Chinese Patent Office to issue the Notifications about whether the Request is accepted or not;

  • For Chinese patent applications/patents in re-examination procedures or invalidation procedures: the Chinese Patent Office will examine the Request as well as the documents in support and send the Notifications about whether the Request is accepted or not as soon as possible.

    C. The terms and procedures:

  • For a Chinese patent application for invention: the 1st office action will be issued within 45 days from date of Official Receipt of the Request for prioritized examination, and the final decision on grant or rejection will be made within a year;

  • For a Chinese patent application for utility model or design, the final decision on grant or rejection will be made within 2 months from the date of Official Receipt of the Request for prioritized examination;

  • For a Chinese patent application in re-examination procedures: the final decision to withdraw or withhold the Rejection Decision will be made within 7 months from the Official Receipt of the Request for prioritized examination;

  • For a Chinese patent for invention or utility model: the case will be closed within 5 months, and for a Chinese design patent, it will be within 4 months from the Official Receipt of the Request for prioritized examination.

     D. Time for response:

  • For a Chinese patent application for invention: a notification or office action should be responded within 2 months from the notification date;

  • For a Chinese patent application for utility model or design: a notification or office action should be responded with 15 days;

  • When responding the notification or office action, the applicant cannot use the postal days.

  • For a Chinese patent application in re-examination procedures or a Chinese patent in invalidation procedures, the term for response is as same as an ordinary application/patent.

Bearing in mind the prioritized examination can not guarantee your safety in the examination as the New Regulations also regulate the situations where the Chinese Patent Office can terminate the prioritized examination and convert the procedures to the standard ones.

4. Termination of the prioritized examination? (Rule12 & 13)

     A. For a Chinese patent application, if one of the four situations as below arises, the Chinese Patent Office can terminate the prioritized examination, and use the ordinary procedure to continue the examination. The Chinese Patent Office will inform the applicant of the termination as soon as possible:

  • After the Request for prioritized examination is accepted, the applicant makes voluntary amendments under the Implementing Regulations, Rule 51, para 1 and 2;
  • The response to a notification or office action is overdue or extended;
  • The documents filed in support of the Request for the prioritized examination are found as false or fake, and in bad faith;
  • The patent application is found abnormal during the examination procedures.

     B. For a Chinese patent application/patent in re-examination procedures or invalidation procedures, if one of the six situations as below arises, the Chinese Patent Office can terminate the prioritized examination, and take the ordinary procedure to continue the examination. The Chinese Patent Office will inform the applicant of the termination as soon as possible:

  • The response to the notification is delayed;

  • After the Request for prioritized examination is accepted, the applicant requesting the invalidation submits supplementary grounds and evidence;

  • After the Request for prioritized examination is accepted, the patentee makes amendments of the claims instead of deletion.

  • The re-examination procedures or the invalidation procedures is suspended;

  • The procedures for re-examination or invalidation rely on the conclusions of other cases;

  • Difficult cases, which is approved by the Director of the Re-examination Board.

The New Regulations mentioned above reveals the substantial efforts made by the Chinese Patent Office to speed up the examination procedures and to invigorate the patent applications and enforcement, which, undoubtedly, is exciting news for the most qualified Chinese individuals and entities. However, it is well worthy of our notice that the New Regulations have excluded the foreign applicants.

It is the Recommendation that is difficult for the foreign applicants to obtain to validate their qualification. While, since the New Regulations clearly indicate one exception for submitting the Recommendation, i.e. the first-filing Chinese patent applications, the foreign entities would feel free to request the prioritized examination, given that they have their creation-invention or designs firstly filed in China and claim the first-filing Chinese patent application to other countries or regions.

On the other hand, a Chinese patent application/patent jointly owned by both a Chinese and a foreign entity shall also enjoy the prioritized examination, so that all the sufficient documents for requesting the prioritized examination can be in good preparation by the Chinese co-owner. In practice, foreign applicants with Chinese subsidiaries or affiliates, given that their Chinese applications/patents belong to the applicable situations, may take this measure to accelerate the examination.

As the New Regulations are beneficial for both domestic and foreign applicants, we can take it for granted that the Chinese Patent Office will receive more requests in this regard from August 1st ,2017 and the examination in China will develop at full speed.